Double patenting referral to the Enlarged Board of Appeal
Answers could have a significant impact on common filing strategies

For the first time, questions have been referred to the Enlarged Board of Appeal specifically addressing the EPO’s approach to double patenting. The questions concern the circumstances, if any, in which there might be a “legitimate interest” in the same applicant being granted multiple patents for “the same subject-matter”.

It is possible that the Enlarged Board of Appeal’s answers will have a significant impact on filing strategies that are frequently employed in practice at the EPO. For example, the answers could be relevant to strategies which involve the filing of divisional applications to protect against commercial or legal uncertainties. Another common strategy which might be affected is the use of parent and divisional applications to prosecute some subject-matter at an accelerated pace (e.g. narrow claims of the highest commercial value), while prosecuting other subject-matter at a slower pace (e.g. of broader scope).

The questions come from Technical Board of Appeal 3.3.01, which handles pharmaceutical matter, and concern an application filed by Nestec S.A. Nestec S.A.’s application (10718590.2) was refused by the Examining Division following an assessment that claim 1 was “100% identical” to the subject-matter claimed in the patent from which 10718590.2 claimed priority. The Examining Division therefore argued that the grant of 10718590.2 would be contrary to the prohibition on double patenting referred to in the obiter dicta of Enlarged Board decisions G1/05 and G1/06. Nestec S.A. appealed from the Examining Division’s refusal.

According to G1/05 and G1/06, the principle of the prohibition on double patenting was based on the idea that, “the applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor”.   However, subsequent decisions provide conflicting views on the circumstances under which applicants have a “legitimate interest” and the subject-matter is the “same”.

In the present case, the Technical Board of Appeal issued a communication prior to oral proceedings where it recognised the discrepancies in the EPO case law and stated “there is no uniform practice and even conflicting case law on the question of whether and to what extent double patenting is prohibited”.  Oral proceedings took place before the Technical Board of Appeal on 7th February 2019, but the written decision has not yet been issued.  However, based on the minutes of the oral proceedings, the questions referred to the Enlarged Board of Appeal are likely to be as follows:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1 If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of

a European patent application on the basis of which a European patent was granted to the same applicant?

2.2  In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

The answer to question 2.2 should clarify whether an extra year of patent term is a legitimate reason for pursuing identical claims in a second patent, claiming priority from the first.

The decision from the Enlarged Board of Appeal may have a significant impact on common filing strategies. We expect the Enlarged Board’s decision in 2020.

If you have any questions about your patenting strategy as a result of these questions, please contact the authors or your usual contact at Carpmaels & Ransford.